Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/404572

 

OFFICE ACTION

 

Please note that all issues not discussed in this office action have been resolved.

 

In the suspension letter dated September 5, 2002, the applicant was notified that there may be a likelihood of confusion between its mark and pending applications Serial Nos. 76-373621 and 76-247479.  Applications Serial No. 76-247479 has abandoned.  Thus, the potential refusal under Section 2(d) of the Trademark Act pertaining this application is hereby WITHDRAWN.  However, application Serial No. 76-373621 has matured into Registration No. 2,717,209.  Therefore, registration is refused as follows.

 

Likelihood of Confusion Refusal

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2,717,209 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the examining attorney must compare the goods and services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).  TMEP §§1207.01 et seq. 

 

The applicant applied to register the mark WISE OWL and design for “electronic toy books and electronic game boards for children.”  The registered mark is WISE OWL for “retail store services, mail order catalog services, and electronic retailing services via computer, all featuring educational materials.”

 

            Similarity of the Marks

 

When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  TMEP §1207.01(c)(ii).

 

Here, the word portions of the marks are identical.  The wording in both marks is WISE OWL.  The addition of the design to the applicant’s mark does not obviate the similarity in sound, connotation and overall commercial impression of the two marks.

 

            Comparison of Goods and Services

 

It is well recognized that confusion is likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other.  See, e.g., In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG'S (stylized) for retail grocery and general merchandise store services held likely to be confused with BIGGS and design for furniture); In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074 (TTAB 1990) (GOLDEN GRIDDLE PANCAKE HOUSE (with "PANCAKE HOUSE" disclaimed) for restaurant services held likely to be confused with GOLDEN GRIDDLE for table syrup).  See TMEP § 1207.01(a)(ii).

 

Here, the applicant has electronic toy books and electronic game boards for children.  The registrant has a variety of retail services featuring educational materials.  The applicant’s goods are related to the registrant’s services in that the applicant’s goods are among the items that could be sold through the registrant’s services.  The applicant’s identified “electronic game boards” and “toy books” for children include educational toy books and educational electronic game boards, thus, these goods are included within the scope of the items sold through the registrant’s services.  Thus, because of the similarity in appearance and overall commercial impression of the applicant’s mark and the registered mark, and because of the relatedness of the applicant’s goods and the registrant’s services, purchasers encountering those goods and services are likely to mistakenly believe they are provided by a common source.  Accordingly, registration is refused.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Filing Fee Advisory - Fee Increase Effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003. 

 

Responding to this Office Action

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response. 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

/Stacy B. Wahlberg/

Trademark Attorney

Law Office 113

(703) 308-9113 ext. 206

LO Fax (703) 746-8113

LO email: ecom113@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.